Ex Parte Tzvieli et al

Patent Trial and Appeal Board

Feb 14, 2019

15231276 (P.T.A.B. Feb. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/231,276 08/08/2016
16759 7590 02/19/2019
Active Knowledge Ltd.
P.O. Box294
Kiryat Tivon, 36011
ISRAEL
FIRST NAMED INVENTOR
Arie Tzvieli
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
Fa3 3434
EXAMINER
PEHLKE, CAROLYN A
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
02/19/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
taltiber@gmail.com
ari.frank@gmail.com
giltib@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARIE TZVIELI, ARI M. FRANK, and
GIL THIEBERGER
Appeal2019-001535
Application 15/231,27 6
Technology Center 3700
Before JEREMY M. PLENZLER, LISA M. GUIJT, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Decision rejecting claims 1-9, 11-15, and 18-23. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
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Application 15/231,27 6
CLAIMED SUBJECT MATTER
Claims 1, 12, and 18 are independent, with claims 2-9, 11, 13-15, and
19-23 depending from claim 1, 12, or 18. Claim 1 is reproduced below:
1. A system configured to detect an allergic reaction of a
user, compnsmg:
a frame configured to be worn on the user's head;
a thermal camera physically coupled to the frame and
configured to take thermal measurements of at least a portion of
the user's nose (THN);
wherein the frame is configured to hold the thermal camera less
than 10 cm away from the user's face such that the thermal
camera does not protrude beyond the tip of the user's nose; and
a computer configured to determine an extent of the allergic
reaction based on THN.
REJECTIONS 1
1. Claims 1-9, 11-15, and 18-23 are rejected under 35 U.S.C.
§ 112(b) as indefinite.
2. Claims 1--4, 6-9, 11-15, 18-20, and 23 are rejected under 35
U.S.C. § 103 as being unpatentable over Clark (A. T. Clark, J. S. Mangat,
S. S. Tay, Y. King, C. J. Monk, P.A. White, and P. W. Ewan, "Facial
thermography is a sensitive and specific method for assessing food
challenge outcome," Allergy, vol. 62, no. 7, 744--749 (2007)) and Mizuno
(Tota Mizuno and Yuichiro Kume, "Development of a Glasses-Like
Wearable Device to Measure Nasal Skin Temperature," International
Conference on Human-Computer Interaction, 727-732. Springer
International Publishing (2015)).
1 Various rejections were withdrawn in the Examiner's Answer. Ans. 2.
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3. Claims 5 and 21 are rejected under 35 U.S.C. § 103 as being
unpatentable over Clark, Mizuno, Texas Instruments
(http://www.ti.com/ww / eu/ sensampbook/tmp006. pdf?DCMP= HP A_A8_sen
sampbook&H0S=TMP006-dt2-eu, posted Dec. 2012), and Admitted Prior
Art. 2
4. Claim 22 is rejected under 35 U.S.C. § 103 as being unpatentable
over Clark, Mizuno, and Clark '12 (A. Clark, J. Mangat, Y.King, S. Islam,
K. Anagnostou, L. Foley, J. Deighton, & P. Ewan, "Thermographic imaging
during nasal peanut challenge may be useful in the diagnosis of peanut
allergy," Allergy, vol. 67, no. 4, 574--576 (2011)).
5. Claim 1 is rejected on the ground of non-statutory double patenting
as being unpatentable over claims 1 and 2 of Application No. 15/832,815.
OPINION
Indefiniteness
The Examiner rejects claims 1-9, 11-15, and 18-23 under 35 U.S.C.
§ 112(b) as indefinite. Final Act. 6-7; Ans. 2-5. Appellant argues claims
1-9, 11-15, and 18-23 as a group. Appeal Br. 12-14; Reply Br. 2--4. We
select claim 1 as representative. Claims 2-9, 11-15, and 18-23 stand or fall
with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
One basis for the Examiner's determination that the claims are
indefinite is that it is "impossible to reasonably determine the metes and
bounds of the claim[ s] in the absence of any structural limitations regarding
the positioning and/or shape of the frame and cameras" because "[t]he scope
of the instant claims depends on the anatomy of the user, which is not
2 The Examiner cites paragraphs 132 and 204 of the Specification as
Admitted Prior Art.
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defined by the claims." Ans. 4. The relevant limitation in claim 1 recites
that "the frame is configured to hold the thermal camera ... such that the
thermal camera does not protrude beyond the tip of the user's nose." The
Examiner explains that "[ d]efining the limitations of the structure of the
claimed system in a way that is dependent on the anatomy of the user
renders the claim indefinite because there can be no objective determination
of the requisite structure of the claimed system." Id. at 3.
Appellant responds that "the Examiner is wrong" because, "[f]or any
system that includes a camera as described in the claims, one can simply put
the system on a user's head and check if these conditions are met." Reply
Br. 2-3; see also id. at 4 ("It is simple to determine whether in a system that
includes a thermal camera ... the camera ... does not protrude beyond the
tip of the nose. This can be done either based on simply putting the system
on users and/or relying on common knowledge of human anatomy.").
A claim is properly rejected as indefinite if, after applying the
broadest reasonable interpretation in light of the specification, the metes and
bounds of a claim are not clear because the claim contains words or phrases
whose meaning is unclear. In re Packard, 751 F.3d 1307, 1310 (Fed. Cir.
2014) (per curiam); see also Ex parte McAward, Appeal 2015-
006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential)
( adopting the approach for assessing indefiniteness approved by the Federal
Circuit in Packard).
Notably, Appellant does not identify, let alone provide persuasive
evidence supporting, any standard for determining whether a device meets
the claim requirement that "the thermal camera does not protrude beyond the
tip of the user's nose." Rather, Appellant's sole argument is an admission
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that such a determination depends on each individual user's anatomy. See
Reply Br. 3 (arguing "one can simply put the system on a user's head and
check if these conditions are met"). Appellant's allegation that such a
determination can be made by "relying on common knowledge of human
anatomy" (id. at 4) offers no insight into the relationship between a user's
anatomy and the device recited in the claim. This relationship between a
particular user and the device makes the claim unclear because it requires a
specific relationship between the recited device and an unknown variable
(the specific anatomy of an end user).
Accordingly, we sustain the Examiner's decision to reject claims 1-9,
11-15, and 18-23 under 35 U.S.C. § 112(b) as indefinite.
Obviousness
Claims 1, 12, and 18 each recite that "the thermal camera does not
protrude beyond the tip of the user's nose." The Examiner finds that
Mizuno teaches that limitation. Final Act. 10. As explained above, we
agree with the Examiner that the limitation renders the claims indefinite.
The Examiner makes clear that, in view of the indefiniteness of the claims,
evaluating the obviousness rejections requires us to resort to speculation.
See Ans. 5 ("While Appellant asserts that the cameras of Mizuno protrude
beyond the user's nose, Examiner respectfully notes that this may or may not
be true depending on the specific user's anatomy.").
Accordingly, we do not reach the merits of the obviousness rejections.
Instead, we reverse those rejections proforma. See In re Steele, 305 F .2d
859, 862 (CCPA 1962) (holding that the Board erred in affirming a rejection
of indefinite claims under 35 U.S.C. § 103(a), because the rejection was
based on speculative assumptions as to the meaning of the claims).
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Double Patenting
The Examiner provisionally rejects claim 1 on the ground of non-
statutory double patenting as being unpatentable over claims 1 and 2 of co-
pending Application No. 15/832,815. Final Act. 15-16.
As explained above, we do not reach the merits of the rejection.
Instead, we reverse the rejection proforma.
DECISION
We AFFIRM the Examiner's decision to reject claims 1-9, 11-15,
and 18-23 under 35 U.S.C. § 112(b) as indefinite.
We REVERSE proforma the Examiner's decision to reject claims 1-
9, 11-15, and 18-23 as unpatentable under 35 U.S.C. § 103.
We REVERSE proforma the Examiner's decision to reject claim 1 on
the ground of non-statutory double patenting.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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